By Barry Herman
On October 6, 2010, the Federal Circuit issued its opinion in Lucky Litter LLC v.  Int’l Trade Comm’n, No. 2009-1470, -1474.  This was an appeal from the ITC’s final determination in Certain Self-Cleaning Litter Boxes and Components Thereof (337-TA-625) in which the Commission found violations of Section 337 as to both Respondents Lucky Litter, L.L.C. (“Lucky Litter”) and OurPet’s Company (“OurPet’s”) as a result of infringement of U.S. Patent No. RE36,847 (the ‘847 patent).  The Federal Circuit concluded that the Commission erred when it read a “cat exit” limitation into claim 33, and that, without this limitation, the claim would have been obvious.  It reversed the Commission’s determination that claim 33 was not proven to be invalid and vacated the corresponding exclusion orders and cease-and-desist orders.

By way of background, and as reported in our February 11, 2009 and April 13, 2009 posts, the investigation was instituted on December 28, 2007, based on the complaint of Applica Consumer Products, Inc. of Miramar, Florida (“Applica”) and Waters Research Company of West Dundee, Illinois (“Waters”).  On December 1, 2008, ALJ Rogers determined that the Respondents Lucky Litter and OurPet’s violated Section 337 based on the importation, sale for importation, or sale after importation of certain self-cleaning litter boxes and components thereof by reason of infringement of claim 33 of the ‘847 patent.  The Commission reviewed and affirmed ALJ Rogers’ findings of infringement and that claim 33 was not invalid, and issued both limited exclusion orders and cease-and-desist orders against Lucky Litter and OurPet’s.

The Federal Circuit agreed with appellants that the construction adopted by the Commission – that “automatic operation position” be construed as “a position of the mode selector switch where combing is initiated in response to a cat exit” – was incorrect because neither the claim nor the specification provided support for limiting the term to a cat exit.  Further, the Federal Circuit found that the prosecution history showed that “the patentee viewed his invention more broadly and sought reissue to remove ‘cat exit sensor and delay means which are too limiting of the invention.’”

After determining the proper claim construction, the Federal Circuit then addressed the invalidity issue.  It agreed that claim 33 was not anticipated by the Carlisi reference since Carlisi did not disclose a mode selector switch, as required by the claim.  The Court found, however, that “even if Carlisi does not precisely disclose a mode selector switch, modifying Carlisi’s litter box to include such a switch would have been trivial to one of ordinary skill in the art.”

The intervenors (Applica and Waters) asserted alternative bases for supporting a violation of Section 337 on the basis that the Commission erred when construing terms in other asserted claims of the ‘847 patent, and that under their proposed constructions, the accused products would infringe those other claims.  The Court found these arguments “without merit” and concluded that there was no error in the Commission’s construction of these other claim terms.